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Thursday, 19 June 2008

The IPKat noticed this article on the BBC news website, in which EPO President Alison Brimelow is quoted as saying that she is becoming worried about the large backlog (of the order of millions) of pending patent applications worldwide, and is considering what should be done about it. Has the time perhaps come for 'mutual recognition', where patents granted by one office would be automatically also valid before other offices? The IPKat thinks perhaps not, at least while standards at the EPO and USPTO remain so widely different, but agrees that it doesn't hurt to talk about the possibilities.

David,please read more carefully, the article which indicates: "somewhere between five and ten million inventions globally queuing for approval". This statement does not allow any logical consequence supporting the allegation that the backlog at the EPO is in "the order of millions".

Surely 5-10 million is not that large a back log? Remember, these are not separate inventions, but most probably a smaller number filed in many countries. Also, is it unreasonable for a competant examination process to take up to say 3 years, so there will always be a backlog of at least 3 times the total number of applications filed each year?

A more meaningful statistic would be how many patent applications are still pending that are over e.g. 3 years old.

It may be interest that according to EPO statistics, 135000 European applications were filed in 2006 (seems to be the most recent data available). If it takes 3-5 years for grant that probably equates to around half a million patents pending.

Similarly, according to USPTO statistics for the same year around 453000 US applications were filed - which equates to around 2 million patents pending.

The maths is pretty rough but 5-10 million pending worldwide doesn't seem that far out ...

Applications to the EPO, direct + via PCT route, bring a total of over 200,000 per year. So yes, even 3 years delay means 600,000 or so in the works and, since the average is now about 42 months from what I remember, we should be talking about 700,000 whereas I think the backlog is significantly less. The US has over 1 million and that represents over 2 years of backlog but set against a time to grant of over 30 months.

I interviewed Alison Brimelow and Ciaran McGinley, the EPO Controller, back in May. They told me that the EPO backlog was forecast to stand at one million within five years.

“When we used to talk about dealing with backlogs our main focus was on timeliness. Now, given the cross-patenting between regions, even if we deliver good pendencies, we will still have a backlog blackhole,” he [McGinley] said. One way of looking at it, he continued was that all the world’s major offices now have a permafrost of pending applications. This, McGinley said, created real uncertainty. The US will soon be at a point when there will be one million pending applications and Europe is forecast to be there within five years. It is important to work out if there are ways of shining a light into the blackhole to find out what lurks within. “If we can’t then the current distortions that you see in the US market - which have led to the emergence of patent trolls, for instance – will begin to occur in Europe.”

To look at the medical devices area is instructive. 10% increase, year on year, yet the EPO is currently pumping out its EESR's routinely just a few months after filing, and meanwhile clawing back the horrible backlog caused by the swamping of EPO examining resources some years ago by US medical device applicants doing active PCT Ch II prosecution at the EPO as IPEA. Ask for PACE if you want your app to go straight through to issue. In medical devices I'm an EPO fan and I think it is doing a great job of managing its workload, and of doing good and early an examination that will serve for all the world (including of course USPTO examiners who visit Register Plus when its accessible).

It's interesting that this blog post coincides with this EPO press release - which they've released before in a slightly different form, I recall.

http://www.epo.org/topics/news/2008/20080619.html

What intrigues me is that the EPO say that: (a) patent filings are up(b) patent grants are down

and spin this as being do do with better patent quality. Where did that conclusion come from. In the absence of the vitally important statistics of how many applications are still pending or how many have been refused, such a conclusion cannot possibly be made with any certainty.

Are we just to take their word that fewer granted patents means better patent quality rather than just a sign of a surge in the backlog or, alternatively, a surge in the number of low quality patent applications which had no prospect of grant anyway?

Does this (millions of patents pending) raise the argument of absolute ownership v relative ownership?

Cf Land Law in England and Wales where there is registered vs unregistered land. Claims in registered land depend upon getting into the Land Registry (absolute ownership); claims in unregistered land depend upon the relative 'rights/use' etc of the contending land owners.

ps If anyone knows of an academic text discussing the above, I'd be grateful for a link.

That in 2007 the number of filings was up, but the number of grants down is actually not surprising at all, and presumably has nothing at all to do with either "higher quality" or "slower prosecution": considering that the average delay from first filing to grant is about 5 years, the average patent granted in 2007 was filed in 2002. When did we last see a decrease in patent applications? Right...2002.

As for guessing Ms. Brimelow's motivation for suddenly exposing this problem, I must admit defeat. After all, in my experience, most inventors are perfectly happy with a long time to grant in Europe, which delays the moment when they must find a big wedge of money to pay for the national validations and maintenance fees. Of course, I doubt that the Administrative Council wants to hear that. The actual losers from this "backlog" are competitors who are kept in uncertainty about the final coverage...and, of course, the national offices represented in the AC, which must wait for their share in the renewal fees...

Losers are "competitors who have to wait for the final coverage" are they? I think not. With the savagery with which ED's are now interpreting Art 123(2) EPC, the only thing you're going to get through to issue (whether in the parent or a grand-daughter divisional) is the verbatim text as filed. Any uncertainty as to scope of protection after issue is the fault of the courts, and there is less and less of that too. For Europe, read the WO and get construing, you won't go far wrong. Where's the problem, apart from the "national interest" expressed at AC level?

Given the fact that the AC members are mostly representatives of the national offices, the AC has many interests which are not in line with those of the EPO or the applicants.Clearly AC influence is more and more politically driven but in addition to that it appears that, when compared to the past (when most representatives came from countries with high quality national patent offices) overall IP competence is low. How otherwise would they come up with the idea of mutual recognition in a world of totally different standards?

maxdrei Extrapolating from the Written Opinion where a granted EP may end up seems rather risky to me, in particular for "fuzzy" applications (like we often see coming from the other side of the pond), especially those with a determined patent attorney. Then there's the risk of divisionals. And finally, you need an EPO Written Opinion to start with: God help whoever has to deal with an Euro-PCT where the USPTO was the International Search Authority.

I interpret Alison's comments as a message to the anti-patent lobby that she is enforcing the inventive step barrier more carfully / raising it. While the former is OK insofar as it does not lead to refusal of applications with merit, the latter of course cannot be said explicitly. However the actual EPO quality drive seems to focus on the various forms of "clarity"; many of these objections are irrelevant to quality, if not just plain wrong (either in institutional prejudice concerning how claims should be drafted or in fair interpretation of the claim), and result in delaying consideration of the real issue of inventive step. If you want quality patents quickly, look at inventive step first.

Well, anonymous, I agree that most written opinions coming out of the USPTO are barely useful. I agree that the EP-B to watch out for is the B on a divisional, that is, on subject matter that wasn't searched on the original WO claims but, even so, we know what will get past 123(2) don't we? Imagine yourself as Opponent. You know what claims you can exterminate, don't you? Myself, I need a top quality search. Once I have that, the rest of the clearance study I can do myself, can't I? Hence the importance of an early EESR, not so much for the opinion as for the high quality search report, no?

maxdrei Having an EESR is indeed crucial. The problem is that you'll get an early EESR only for first filings, PCTs where the EPO was the ISA, or applications with priority from a country that subcontracts its searches to the EPO (France, Belgium, Switzerland...) European applications with other priorities may easily rest at the bottom of an examiners' pile till Kingdom come (or 20 years after filing, whichever comes first). Of course, EPO management could very easily put an end to this by setting cut dates for the searches to be performed on those files, just as they do for the others...

....and if you request PACE? Not many folks do, for the obvious reasons: 1) why cut off your opportunities to file divisionals 2) why reveal to competitors what your line is 3) why spend money on attorney hours before you have to 4) why hasten national annuities all over Europe while you need pay only one,to the EPO? But, if you must get early to issue, just ask the EPO to help you, no?

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